T.M.E.P. § 504.03
Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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504.03 Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title

In the situations set forth in TMEP §504 , the Trademark Database will be automatically updated to show the last recorded owner regardless of whether the Assignment Database shows that the last recorded owner has a clear chain of title. If the Trademark Database is automatically updated to show ownership of an application or registration in a party who does not have a clear chain of title as evidenced by the Assignment Database, the true owner of the application or registration may file a written request to have the ownership field in the Trademark Database corrected. The USPTO will grant a request for correction of the ownership field if:

(1) The Trademark Database was automatically updated to show ownership in a party who does not have a clear chain of title according to the Assignment Database; and

(2) The Assignment Database shows a clear chain of title in the party requesting correction of the ownership field in the Trademark Database.

The correction of the Trademark Database will not be automatically reflected in the Assignment Database. To correct the assignment records, a party must follow the procedures set forth in TMEP §§503.06 et seq. for correcting errors in the Assignment Database.

Example: ABC Corporation owns Application No. 1. An assignment of the entire interest and goodwill is filed transferring ownership of Application 1 from ZED Corporation to XYZ Corporation. The Assignment Services Division records the assignment and transmits the trademark assignment information to the Trademark Operation. The Trademark Database is automatically updated to show XYZ Corporation as the new owner of Application 1. The Trademark Operation will correct its database, upon ABC Corporation's request, because the Assignment Database does not show a clear chain of title from ABC Corporation to XYZ Corporation, and the Assignment Database shows a clear chain of title in ABC Corporation.

In all other situations, a party requesting correction of the ownership records of the Trademark Operation must follow the procedures for correcting errors in recorded documents or cover sheets, as set forth in TMEP §§503.06 et seq. That is, the party must file corrective documents with the Assignment Services Division and pay the recordal fees necessary to correct the error, then notify the Trademark Operation that the corrective documents have been recorded.

Prior to registration, a request for correction of the ownership field in the Trademark Database should be made in an amendment directed to the examining attorney. If such a request is filed after publication, it will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.02 et seq. In a §1(b) application, if a request for correction of the ownership field is filed between the issuance of the notice of allowance and the submission of a statement of use, the USPTO will place the request in the file for consideration at the time of examination of the statement of use. 37 C.F.R. 2.77; TMEP §1107.

After registration, a request for correction of the ownership field should be made in the form of a request for correction under §7(g) of the Trademark Act and 37 C.F.R. 2.174.